Vacating a district court’s grant of a motion to dismiss a trademark infringement claim against defendants Oprah Winfrey, Harpo, Inc. and Harpo Productions, Inc. (collectively, Harpo), the U.S. Court of Appeals for the Second Circuit disagreed with the lower court’s holding that defendants demonstrated fair use of plaintiff’s mark and also held that plaintiff is not required to make a threshold showing that defendants used the phrase at issue as a “trademark in commerce” in order to state a claim for infringement under the Lanham Act. Kelly-Browne et al. v. Winfrey et al., Case No. 12-1207-cv (2d Cir., May 31, 2013) (Straub, J.) (Sack, J., concurring).

Plaintiff, Simone Kelly-Brown, is the owner of Own Your Power Communications and the federally registered OWN YOUR POWER trademark (registered in 2008), under which she offers services including workshops and seminars in the fields of entrepreneurship and personal awareness. In 2011, Kelly-Brown sued Harpo for trademark infringement, reverse confusion and false designation of origin after she discovered that Oprah Winfrey’s October 2010 issue of O Magazine featured the “Own Your Power” phrase on its cover, in addition to Harpo’s use of the phrase in connection with an array of online content, as well as the production of an “Own Your Power” event, which was later re-capped in other issues of the magazine and on Oprah’s website. Kelly-Brown also brought suit for vicarious and contributory trademark infringement against several corporate sponsors of Harpo’s “Own Your Power” event, such as Wells Fargo, Estee Lauder and Clinique Laboratories, but the 2d Circuit affirmed the district court’s dismissal of those claims.

The district court granted Harpo’s motion to dismiss in its entirety, finding that Harpo’s use of “Own Your Power” constituted fair use.  The defense of fair use requires proof that the use of a mark is made other than as a trademark, in a descriptive sense and in good faith. The district court reasoned that Harpo’s use of the phrase was non-trademark use because observers of the website, magazine and/or the “Own Your Power” event would not believe that they were affiliated with Kelly-Brown and her company. The district court also found that Harpo’s use of the phrase was descriptive because it “described an action that it hoped that [m]agazine readers would take after reading the [m]agazine.” Finally, the district court also held that Harpo did not exhibit bad faith in using the mark. Kelley-Brown appealed.

On appeal, the 2d Circuit found that Harpo had used the “Own Your Power” phrase “in commerce” because it was used on and in connection with goods and services, namely, the O Magazine and sponsored website content.  Accordingly, the court declined to adopt the rule that a plaintiff must show that a defendant was using allegedly confusingly similar content “as a mark,” i.e., “as a symbol to attract public attention,” in order to establish consumer confusion.  The court then reviewed the three fair use requirements to determine if Harpo met its defensive burden.

With respect to trademark use, the Court agreed with Kelly-Brown’s claims that the repetitive use of the “Own Your Power” phrase across various platforms indicated that Oprah Winfrey and Harpo were attempting to build a new segment of Oprah’s media empire around the catchphrase.  Accordingly, the court rejected Harpo’s claims under the Packman v. Chicago Tribune Co. decision that any use of the phrase on Oprah’s website, or for the event that followed the original use of the mark on the 2010 O Magazine cover, was only incidental to, or derivative of, that original use.

As to Harpo’s claims that use of “Own Your Power” was in a descriptive sense, the court found that Harpo did not meet its burden of proof because use of the mark on the O Magazine cover did not appear to describe the contents of a particular item in the magazine. Finally, because there were disputed factual issues regarding Harpo’s knowledge of Kelly-Brown’s OWN YOUR POWER mark, the court held that the district court erred in finding that Harpo conclusively demonstrated good faith in its use of the phrase.

Because Harpo did not meet its burden to establish a fair use defense, the court vacated the district court’s motion to dismiss and remanded Kelly-Brown’s trademark infringement, false designation of origin and reverse confusion claims.  The court also reinstated her related state law claims. 

Judge Sack contributed a concurring opinion indicating that the majority’s opinion should have emphasized the fact that the alleged attempt by Harpo to create a connection between Oprah Winfrey and the “Own Your Power” phrase through the repeated used of the phrase in varying contexts and across media platforms was reason to reject the fair use defense and not solely because of the use of the mark on the O Magazine cover.  In particular, Sack voiced concern that the court’s opinion could be “misconstrued to suggest a general limitation upon the ability of a publisher in any medium to use a trademarked term, in good faith, to indicate the contents of its own communication—whether by magazine cover, newspaper headline, ‘blog’ heading, or otherwise.”